DETAILED ACTION
Pending Claims
Claims 1 and 3-24 are pending.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Election/Restrictions
Claims 1 (Group I), 14-17 (Group III), and 18-24 (Group IV) are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on November 15, 2023.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on January 12, 2026 has been entered.
Response to Amendment
The rejection of claim 3 under 35 U.S.C. 103 as being unpatentable over Fowler et al. (US 2013/0137572 A1) has been overcome by amendment.
The rejection of claims 4-8 and 10-13 under 35 U.S.C. 103 as being unpatentable over Dihora et al. (US Pat. No. 11,571,674) has been overcome by amendment.
Claim Rejections - 35 USC § 112, 1st paragraph (a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 3-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claim 4 now states: a first epoxy-containing monomer and a second, different epoxy-containing monomer that are combined in a ratio of about 20:80 to 80:20 and are crosslinked with a primary amine. The generic ratio embraces all ratios, including a weight ratio, a volume ratio, and a molar ratio. The original disclosure supports a weight ratio (see page 3, lines 22-23, page 5, lines 15-17, page 8, lines 33-34, and page 17, lines 1-9 of the instant specification; see also paragraphs 0030, 0054, 0076, and 0117 of the pre-publication). However, the original disclosure fails to support the full scope of the instantly claimed generic ratio. The original disclosure also fails to adequately support the end point of “about 20:80” relating to alleged unexpected results. This is a new matter rejection. Claims 3 and 5-13 are rejected because they are dependent from independent claim 4.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 4-13 are rejected under 35 U.S.C. 103 as being unpatentable over Fowler et al. (US 2013/0137572 A1).
Regarding claims 4-10, Fowler et al. disclose: (4) a delivery system comprising a plurality of particles (Abstract; claims 1-23: see “(b)”) that each comprise an outer shell (Abstract; claims 1-23: see “(b)”, “polymer particles”) and a cargo that is retained by the outer shell (Abstract; claims 1-23: see “(b)”, “chemical agent”), wherein the outer shell is at least partially formed from a degradable polymeric system (claims 3-4; see also paragraphs 0040-0044) comprising: a first epoxy-containing monomer and a second, different epoxy-containing monomer that are combined in a ratio of about 20:80 to 80:20 (Examples 12-14 in Table 5) and are crosslinked with a primary amine (Examples 12-14 in Table 5; see also claims 16 & 21, paragraphs 0132-0133, and Examples in Table 4);
(5) wherein the outer shell defines an interior space in which the cargo is retained, and the outer shell comprises a plurality of layers (claims 1 & 13);
(6) wherein the outer shell defines an interior space in which the cargo is retained, and the interior space comprises a core material with which the cargo is combined (paragraphs 0041-0042, 0101 & 0114: see “non-porous particulate minerals as diffusion barrier and/or non-crosslinkable mobile chemicals”);
(7) wherein the outer shell defines an interior space in which the cargo is retained, and the cargo is configured as a plurality of units within the interior space defined by the shell (paragraph 0060; see also paragraph 0157);
(8) wherein the outer shell defines an interior space in which the cargo is retained, and the cargo is controllably diffusible through the outer shell (claims 3-4; see also paragraphs 0040-0044);
(9) wherein the degradable polymeric system is at least partially degradable via a mechanism selected from the group consisting of hydrolytic degradation (claim 4; see also paragraphs 0040-0044); and
(10) wherein the cargo comprises at least one material selected from the group consisting of breakers, scale inhibitors, corrosion inhibitors, crosslinkers, surfactants, cement accelerators, acidizing agents, sensors, bactericides, formation damage control agents, emulsifiers, viscosifiers, tracers, and combinations thereof (paragraph 0048).
Fowler et al. disclose a polymeric particle formed from crosslinked epoxy resins (see claims 16 & 21; Examples). These include exemplary embodiments formed from crosslinking an epoxy resin blend with a primary amine (see Table 5). The epoxy resin blends feature ratios of “3/1” (75:25), “2/2” (50:50), and “1/3” (25:75) (see Examples 12-14 in Table 5). They fail to explicitly disclose: (4) wherein one of the first epoxy-containing monomer and the second, different epoxy-containing monomer includes one or more ester groups. However, the general teachings of Fowler et al. contemplate various epoxy resins (see paragraphs 0128-0132) and blends thereof (see paragraph 0128). These epoxy resins include glycidyl esters of carboxylic acids (see paragraph 0129).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the instantly claimed epoxy monomer combination (a first epoxy-containing monomer and a second, different epoxy-containing monomer, wherein one of the first epoxy-containing monomer and the second, different epoxy-containing monomer includes one or more ester groups) in the polymeric particles of Fowler et al. because: (a) Fowler et al. disclose a polymeric particle formed from crosslinked epoxy resins, including exemplary embodiments formed with a combination of epoxy resins; (b) the general teachings of Fowler et al. contemplate various epoxy resins and blends thereof; and (c) the epoxy resins of Fowler et al. include glycidyl esters of carboxylic acids.
Lastly, Fowler et al. fail to explicitly disclose: (4-10) wherein degradability of the degradable polymeric system is tunable based upon the weight percentage of the degradable polymeric system that is formed by the epoxy-containing monomer including the one or more ester groups. However, the obvious variation of Fowler et al. would have been capable of this intended use or future modification because it obviously satisfies all of the material/chemical limitations (and the relative amounts thereof) of the instantly claimed delivery system, including the epoxy-containing monomer including the one or more ester groups.
Regarding claims 11-13, Fowler et al. fail to explicitly disclose: (11) wherein the particles have an average size of about 5 mm or less; (12) an average size of about 1 mm or less; and (13) an average size of about 500 nm or less. Rather, they disclose a mean particle diameter of below 200 microns or below 100 microns (see paragraph 0047). In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Therefore, the teachings of Fowler et al. would have obviously embraced embodiments featuring the instantly claimed average particle size (about 5 mm or less; about 1 mm or less; or about 500 nm or less) because: (a) Fowler et al. disclose a mean particle diameter of below 200 microns or below 100 microns; and (b) it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Fowler et al. (US 2013/0137572 A1) in view of Fowler et al. (US 2013/0203601 A1).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Fowler et al. (US 2013/0137572 A1) in view of Kims et al. (US 2014/0274720 A1).
Regarding claim 3, the teachings of Fowler et al. (‘572) are as set forth above and incorporated herein. The exemplary embodiments of Fowler et al. (‘572) are cured with polyoxypropylene diamine (see Table 5; see also Table 4). The amine hardener is a primary amine represented by the following general structure:
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Fowler et al. contemplate the use of other amine hardeners (see paragraphs 0132-0133). However, they fail disclose the use of (3) triethylenetetramine (TETA).
Fowler et al. (‘601) (see Abstract; paragraphs 0093-0130) and Kims et al. (see Abstract; paragraphs 0117-0151) disclose similar epoxy-based particles. Both Fowler et al. (‘601) (see paragraph 0110) and Kims et al. (see paragraph 0140) demonstrate that polyoxypropylene diamine and triethylene tetramine are recognized in the art as equally suitable amine hardeners for this type of system. In light of this, it has been found that combining or substituting equivalents known for the same purpose is prima facie obvious – see MPEP 2144.06.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the particles of Fowler et al. (‘572) with a triethylenetetramine hardener because: (a) the exemplary embodiments of Fowler et al. (‘572) are cured with polyoxypropylene diamine; (b) Fowler et al. (‘601) and Kims et al. disclose similar epoxy-based particles; (c) both Fowler et al. (‘601) and Kims et al. demonstrate that polyoxypropylene diamine and triethylene tetramine are recognized in the art as equally suitable amine hardeners for this type of system; and (d) it has been found that combining or substituting equivalents known for the same purpose is prima facie obvious.
Response to Arguments
Applicant's arguments filed January 12, 2026 have been fully considered but they are not persuasive.
Applicant’s arguments (see pages 7-9 of the response) suggest that the instantly claimed epoxy blend ratio of about 20:80 to 80:20 is a critical ratio that leads to unexpected results. The argument focuses on their exemplary embodiments featuring ratios of 100:0, 80:20, 60:40, 20:80, and 0:100, where the 80:20, 60:40, and 20:80 ratios outperform the 100:0 and 0:100 ratios.
It has been found that: to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show criticality of the claimed range – see MPEP 716.02(d) II. In the instant case, the examples include three blend ratios inside the claimed range. However, the 100:0 and 0:100 ratios do no reasonably represent blend ratios outside the claimed range because they are not blends. A proper showing would include blends just outside the claimed range, such as 15:85 and 85:15. In addition, these examples only address weight ratios while the claimed ratio embraces any/all ratio types.
Furthermore, the alleged unexpected results of the experimental data is not commensurate in scope with the claimed invention – see MPEP 716.02 (d). The experimental data (see “Sample Preparation” on page 17 of the specification; see also paragraphs 0117-0119 of the pre-publication) is generated with:
a single species of first epoxy-containing monomer: Epon 862 (a diglycidyl ether of bisphenol-F);
a single species of second epoxy-containing monomer: Epalloy 5200 (a diglycidyl ester of hexahydrophthalic acid);
a single species of primary amine hardener: triethylenetetramine; and
10 wt% of reactive diluent: Heloxy 67 (a diglycidyl ether of 1,4-butanediol).
Ratios of the first and second epoxy-containing monomers include: 100:0, 80:20, 60:40, 20:80, and 0:100. All samples are prepared with a 1:1 stoichiometric ratio of epoxy functional groups to amine functional groups. All samples are exposed to “HPHT” conditions, specifically 69 MPa and 100oC, for evaluation of degradability.
In contrast, the claimed invention:
is open to any species of first epoxy-containing monomer,
is open to any species of second epoxy-containing monomer,
is open to any species of primary amine hardener, and
does not appear to require any reactive diluent.
The claimed invention is open to any reactive ratio of epoxy functional groups to amine functional groups. The claimed invention is also open to any conditions for establishing degradability.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
February 12, 2026